Posts tagged “racing legal”

Editor’s Note: I was recently informed that I may not use the phrase “H@ll Ass Racing” in any post or in any announcement about my name change to Mega Monkey Motorsports™. It seems a little overkill to me but frankly, I can’t afford to be sued. Thank you to all my fans who have been so supportive through this transition time. I hope this is the last change I will have to make.

I’d like to spin a tale for you. One full of legalese, a few expenses, a bit of frustration, and a healthy dash of ignorance. In short, a cautionary tale.

The upshot is that due to a trademark violation, I am changing the name of my team to Mega Monkey Motorsports™. Back in February I got a phone call from a lawyer who informed me I was in violation of a trademark, but that the owner, who operates in California, would like to meet me to work out a licensing agreement. I was nervous, but I was going to California anyway, so Dad and I met the owner and agreed to work out a licensing contract. I came home thinking it would all work out.

The next week I spoke with the company and we discussed what the licensing agreement would entail. I was not entirely satisfied with the agreement and I started doing a little research. Big mistake. My first stop was the US Patent and Trademark Office website. I did a search for their trademark and there it was…and it said PENDING. Further, it was pending in the category of Automobile Parts and Design…nothing to do with racing. “HA!” I thought. They don’t even own the trademark! I immediately registered myself as a Motorsports Team and wrote an email explaining my position to this company. In my mind, the matter was done.

It was not. I got an official cease and desist letter from the company. I got an email copy of it the weekend of the Mint 400. I saw it in my inbox and just couldn’t bring myself to open it. I was already so stressed out with our first big race, and I knew if I opened it I would break down and I had to remain strong and positive for my team. I let it lie until that Monday and I immediately dove into my rolodex. I called my two lawyer friends. I called people who I thought had lawyer friends. Then I called those lawyers…anyone who I could get a grain of free advice from. If you haven’t ever contacted a lawyer for a trademark violation case, a simple resolution will apparently cost upwards of $5ooo.oo. Now that may not be a lot for a big company, but it’s a lot for me. So I just grilled lawyer acquaintances until they begged me to stop.

I’d like to preface this next part by saying that if you find yourself in this situation, my only advice is to get advice. As it turns out, trademark law is really complicated and the following applies only to my situation. Okay? Good. There are a few ways a trademark can be established. First, by common law. This company had been using the trademark since the mid 1990s. The fact that their official trademark was still pending didn’t really matter. It’s the common law that trumps all. The official trademark can only strengthen your case. There is also the issue of confusion. Would a consumer think that my racing activities were associated with this company? Since this company was involved in auto and motorcycle design and custom fabrication, the answer from every lawyer I spoke with was yes.

I would like to go on the record that this entire process was nothing but professional on both sides. This company is family owned and produces really cool custom vehicles for law enforcement, SWAT teams, and just for fun. I was disappointed that we couldn’t come to a licensing agreement, but its called off road racing, not off road friends. And so Mega Monkey Motorsports™ was born.

Why Mega Monkey Motorsports™? Well, because Dirt Monkey Racing was taken! I also toyed with Trademark Violation Racing, but when I ran it by some people that had no idea of the back story, they didn’t think it was funny. (To me, it’s hilarious). I paid $700 for a company to do a thorough common law, business name, internet, and trademark search. Why not just do a google search and be done with it? Well, a company could be out there that has no internet presence whatsoever. Remember a google search will just turn up information that’s on the internet, and there are still plenty of folks out there who have no web presence. Hence, $700 for a search company. Then I paid the $500 or so for the official trademark, which is now pending.

So I am attempting to rid the internet of all evidence of THE TEAM WHO SHALL NOT BE NAMED BY PENALTY OF LAW, although it’s difficult. Google never forgets, but fortunately the company has acknowledged that. I can only hope they start generating press of their own since when you google “THE TEAM WHO SHALL NOT BE NAMED BY PENALTY OF LAW“ I am the only thing that comes up for pages and pages (note: not anymore. this company has recently added a racing page to their website and it now shows up third in a google search, but then it’s all me again) I also hope I can generate as much press as Mega Monkey Motorsports™ as I did before. You can help by sharing this blog, tweeting about my name change, subscribing to my new YouTube channel and in general being the awesome fans that you are. And remember, if there is one lesson to be learned from all of this it’s this: